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USPTO Post-Grant Patent Trials 2013


Speaker(s): David J. Kappos, Eugene R. Quinn, Jr., Hon. Theodore R. Essex, John A. Dragseth, Katherine Pauley Barecchia, Michael B. Ray, Michael L. Kiklis, Patricia A. Carson, Prof. Lisa A. Dolak, Robert Greene Sterne, Scott A. McKeown
Recorded on: Mar. 27, 2013
PLI Program #: 42147

David J. Kappos is a partner at Cravath.  He is a leader in the field of intellectual property, including IP management and strategy, the development of global IP norms, laws and practices as well as commercialization and enforcement of innovation-based assets. 

From 2009 to 2013, Mr. Kappos served as Under Secretary of Commerce and Director of the U.S. Patent and Trademark Office (USPTO).  In that role, he advised the President, the Secretary of Commerce and the Administration on IP policy matters and was instrumental in achieving the greatest legislative reform of the U.S. patent system in generations through passage and implementation of the 2011 Leahy-Smith America Invents Act.

Prior to leading the USPTO, Mr. Kappos held several executive posts in the legal department of IBM, including as Vice President and Assistant General Counsel for Intellectual Property from 2003 to 2009.  In that capacity, he managed global IP activities for IBM.  During his more than 25 years at IBM, he also served in a variety of other roles including litigation counsel and Asia Pacific IP counsel.

Mr. Kappos has received numerous accolades for his contributions to the field of IP, including being named one of the “Top 25 Icons of IP” by Law360, one of the “50 Most Influential People in IP” by Managing IP, one of the “Top 50 IP Trailblazers & Pioneers” and one of the “100 Most Influential Lawyers in America” by The National Law Journal, “IP Professional of the Year” by the Intellectual Property Owners Association and being inducted into the Intellectual Property Hall of Fame by Intellectual Asset Management Magazine in 2012.

Mr. Kappos serves on the Boards of Directors of the Partnership for Public Service, the Center for Global Enterprise and the Intellectual Property Owners Education Foundation.  He is a member of the Advisory Board of ORoPO Foundation and Chair of the Advisory Council of the Naples Roundtable.  Additionally, Mr. Kappos is the U.S. Chair of the U.S.-China IP Cooperation Dialogue.  He is also an adjunct professor at Columbia Law School, where he teaches copyright litigation, and Cornell Law School, where he teaches legal advising for the start-up general counsel.

Mr. Kappos received a B.S. summa cum laude in Electrical and Computer Engineering from the University of California, Davis in 1983 and a J.D. from the University of California, Berkeley in 1990.


Gene Quinn is a Patent Attorney and the founder of IPWatchdog.com. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since then it has become one of the leading IP publications on the Internet. IPWatchdog.com has been recognized multiple times by the American Bar Association as a top 100 legal blog, has 3 times been voted the top IP blog, and in 2014 was retired from voting and inducted into the ABA Blawg Hall of Fame. 

Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world. As an electrical engineer with a computer engineering focus, he frequently advises on patent matters relating to software, computer implemented methods, business methods, and Internet innovations.

Between 2003 and 2007 Gene wrote a monthly column for Patent World and served on the Patent World editorial board. He has also previously taught a variety of intellectual property courses at the law school level, including patent law, patent claim drafting, patent prosecution, copyright law, trademark law and introduction to intellectual property. Gene taught at Syracuse University College of Law, Temple University School of Law, The University of Toledo College of Law, Franklin Pierce Law Center, Whittier Law School, and John Marshall Law School.

Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit.


Katherine Barecchia is Assistant General Counsel at SunGard Data Systems Inc., where she handles intellectual property and litigation related matters for the company.  Before joining SunGard, Ms. Barecchia was an attorney at Blank Rome LLP. While at Blank Rome, Katherine’s practice included patent litigation, opinions, and the prosecution of patent applications. She counseled domestic and foreign clients with respect to intellectual property strategies, including: patent mining programs; patent infringement strategies; patent invalidity strategies; patent litigation; patent portfolio development; market clearance analysis for new products; joint defense agreements; patent infringement opinions; and patent invalidity opinions. In addition to her intellectual property practice, Ms. Barecchia also handled commercial litigation matters in both state court and federal court.

 

 

 


Lisa A. Dolak is Senior Vice President and University Secretary at Syracuse University, and the Angela S. Cooney Professor of Law at the Syracuse University College of Law.  As University Secretary, Professor Dolak supports the overall work of the Board and manages the Office of the Board of Trustees. She teaches courses on patent law, civil procedure and the federal courts, and serves as an expert in patent cases, attorney malpractice cases, and practitioner disciplinary proceedings.

During a sabbatical leave from Syracuse University, she served as law clerk to the Hon. Paul R. Michel, Judge (Ret.), United States Court of Appeals for the Federal Circuit.  She served during 2005-2013 as a member of the Federal Circuit’s Advisory Council.  

Prior to attending law school, Prof. Dolak worked for several years as a synthetic organic chemist in pharmaceutical research aimed at the development of new drugs at Bristol-Myers Company and Ayerst Laboratories Research, Inc.

Prof. Dolak received her Bachelor of Science in chemistry from Duquesne University and her Juris Doctor, summa cum laude, from the Syracuse University College of Law.  She is admitted to practice in New York and before the U.S. Patent and Trademark Office.  Her research interests include issues at the intersections of patent law and judicial procedure and patent law and legal ethics.  Representative publications include:

Trial Lawyers in Trouble: Litigation Misconduct and Its Ethics Fallout, 52 U. LOUISVILLE L. REV. 225 (2014)
Litigating Inequitable Conduct after Therasense, Exergen, and the AIA:  Lessons for Litigants, Options for Owners, 13 CHI.-KENT J. INTELL. PROP. 51 (Fall 2013)
America Invents the Supplemental Examination But Retains the Duty of Candor:  Questions and Implications, 6 AKRON I.P. J. 147 (2012)
Ethics in Intellectual Property Negotiations:  Issues and Illustrations, 40 AIPLA Q.J. 197 (2012) 
One Patent, Two Paths:  Federal Circuit Review of Divergent USPTO and District Court Decisions, 4 No. 2 Landslide 22 (2011)
The United States Patent System in the Media Mirror, 58 SYR. L. REV. 459 (2008) (with Blaine T. Bettinger, Ph.D.)
Power or Prudence: Toward a Better Standard for Evaluating Patent Litigants’ Access to the Declaratory Judgment Remedy, 41 U.S.F. L. REV. 407 (2007)


Michael L. Kiklis focuses his practice on patent litigation as well as trials at the USPTO’s Patent Trial and Appeal Board.  He frequently handles high-stakes matters, having been involved in several cases in which over $1 billion was at stake.

Mr. Kiklis has twenty years of experience as an intellectual property attorney and has been involved in numerous intellectual property disputes, ranging from cross-licensing and pre- litigation negotiations to full-blown, bet-the-company litigations.  Mr. Kiklis has extensive experience in both enforcing his clients’ rights as well as defending his clients.  Before joining Oblon Spivak, he was an IP litigation partner at Akin Gump Strauss Hauer & Feld, LLP in the firm’s D.C. office.

With a strong background in computer science, Mr. Kiklis also has extensive experience in software patent matters. Prior to entering law school, he worked as a software developer for six years at some of the computer industry’s leading companies.

Mr. Kiklis is a frequent lecturer and author on cutting-edge intellectual property issues, including the Supreme Court’s patent law jurisprudence, patentable subject matter under 35 U.S.C. § 101, as well as the new contested proceedings at the USPTO’s Patent Trial and Appeal Board.  In fact, he is the author of The Supreme Court on Patent Law, which has been called “a great resource” that fills “a critical gap in our understanding of modern American patent law.”  He is also a co-author of the firm’s Post- Grant Patent practice group.

Mr. Kiklis is also active in pro bono matters. In coordination with the International Senior Lawyers Project, he taught the first-ever intellectual property class in the LLM Program of the National University of Rwanda and served as the thesis advisor to several LLM students.

REPRESENTATIVE MATTERS

Represented a software company in the successful enforcement of its patent against virtually an entire industry of over thirty companies—including Microsoft and IBM—in two patent litigations in the Eastern District of Texas, resulting in favorable settlements

Represented a major computer company in its landmark antitrust case against Microsoft, resulting in a $1.95 billion settlement

Co-counsel on the first Covered Business Method Patent Proceeding filed at the USPTO’s Patent Trial and Appeal Board.

Currently representing clients in several Covered Business Method Patent and Inter Partes

Review proceedings before the USPTO's Patent Trial and Appeal Board

Represented a national organization of legal professionals as co-author of a Supreme Court amicus brief in Bilski & Warsaw v. Kappos

Represented a financial services company in defense of a claim of patent infringement on a business method patent, resulting in a favorable settlement

Represented a trade association as co-author of a Supreme Court amicus brief in Quanta Computer, Inc. v. LG Electronics, Inc.

Represented several large software/computer companies in cross-licensing negotiations with IBM and other high technology companies

Represented a large computer company as opinion counsel in defense of a software patent infringement case where over $1 billion was at stake; the plaintiff dropped its willfulness claim.

ACCOLADES

Intellectual Asset Management (IAM) Patent 1000: The World’s Leading Patent Practitioners, named to its list of the top 1000 patent attorneys in the world; recognized in the Washington, D.C. Metro Area for his patent Litigation work  (2014)

Listed as one of 2013 and 2014's IP Stars in the United States, as well as Virginia, by Managing Intellectual Property.

Computer Science Distinguished Alumni Award given at the 30th anniversary celebration of Computer Science at Boston University Metropolitan College.

Recipient, U.S. Patent and Trademark Office Society's Rossman Award given to the author of the article in the Journal of the Patent and Trademark Office Society that makes the greatest contribution to the field of patents, trademarks or copyrights.

Bar Admissions

District of Columbia
Virginia

Registered to practice before the U.S. Patent and Trademark Office

Court Admissions

Supreme Court of the United States
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the District of Columbia
U.S. District Court for the Eastern District of Texas
U.S. District Court for the Eastern  District of Virginia

Education

J.D., Syracuse University College of Law, magna cum laude
M.S., Computer Science, Boston University,
B.S., Computer Science, University of Massachusetts, Lowell

Professional  Affiliations American  Bar  Association


Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox P.L.L.C. in Washington, D.C.  He has extensive expertise in AIA post issuance proceedings and concurrent patent litigation, USITC 337 investigations, Federal Circuit appeals, EU and China enforcement, reexamination, patent monetization and licensing, and corporate intellectual property best practices (CIPO and Board of Directors).  He is a registered U.S. patent attorney, has spoken and written extensively on these topics, was named in 2015 by the Financial Times as one of the "Top Ten Legal Innovators in North America," was named in 2015 by Law360 as one of  “The Top 25 Icons of IP,” and was named in 2014 by The National Law Journal as an “Intellectual Property Trailblazer and Pioneer.” He is editor in chief of Patent Office Litigation (2012), and Patent Office Litigation 2nd Edition (2017)(Thomson Reuters). He is counsel in more than 200 PTAB contested proceedings and has played a key role in precedent-setting U.S. case law, including: In re Beauregard, (Fed. Cir. 1995), KSR (SCT. 2007), i4i (SCT. 2011), In re Jung (Fed. Cir. 2011), ETG (Fed Cir. 2012), and Hear Wear (Fed. Cir. 2014). Among many honors, he is the recipient of the Sedona Conference Award for Excellence in Advanced Legal Education (2004), the Sedona Lifetime Achievement Award (2012),  and the 2012 Attorney of the Year “Good Scout” Award for his leadership in community service. He has been at the forefront of software patent protection, having represented IBM in the precedent setting In re Beauregard case that produced the 1996 USPTO software patent guidelines and having delivered in 1985 the seminal AI and Expert System Legal Protection presentation before the AIPLA. Sterne Kessler is ranked in 2018 as the 5th largest US IP specialty firm and 337th largest US law firm.


Scott McKeown is a partner in Ropes & Gray’s intellectual property litigation practice and chair of the firm’s Patent Trial and Appeal Board (PTAB) group. He focuses his practice on post-grant patent counseling and litigation matters at the U.S. Patent and Trademark Office (USPTO) and related appeals to the U.S. Court of Appeals for the Federal Circuit. Scott handles all aspects of post-issuance patent proceedings, specializing in administrative trials before the PTAB, such as inter partes review (IPR) and post-grant review (PGR). Named one of the world’s leading patent practitioners for post-grant proceedings by Intellectual Asset Management, Scott is the most active PTAB trial attorney in the U.S., having handled more than 250 PTAB matters since 2012, including those in which more than $500 million was at stake. Furthermore, Scott is recognized as a thought leader in the PTAB industry. He is a Professorial Lecturer in Law at The George Washington University Law School, a member of the teaching faculty of the Practising Law Institute, and was a founding member of the Board of Directors of the PTAB Bar Association. He is also a contributing editor to the Sedona Conference Working Group 10: Patent Litigation Best Practices. Scott maintains an award-winning blog, PatentsPostGrant.com, which examines developments in patent litigation, including issues related to USPTO post issuance proceedings.


THEODORE R. ESSEX

Judge Essex served as an Administrative Law Judge at the Office of Medicare Hearings and Appeals in Cleveland, Ohio, from November 2006 until his United States International Trade Commission (USITC) appointment in October 2007. He previously served as a consultant to the Compensation and Pension Service of the Department of Veterans= Affairs in Washington, DC, from 2005 to 2006.

From 1985 to 2005, Judge Essex served in a variety of positions with the U.S. Air Force (USAF), from which he retired in 2005.  He was Chief of the General Torts Branch of AFLSA/JACT in Arlington, VA, from 2002-2005. He served as Chief of Aviation Law with the Air Education and Training Command, USAF from 2000-2002; as Deputy Staff Judge Advocate with the Air Intelligence Agency, USAF from 1999-2000; as Chief, Operations Law, USAF Headquarters in the United Kingdom from 1996-1999; as an Attorney-Adviser in the AFLEM Office of International Claims and Investment Disputes at the U.S. Department of State from 1995-1996; as a Staff Judge Advocate based in Norway from 1992-1995; as a Deputy Staff Judge Advocate based in the United Kingdom from 1990-1992; as a Circuit Defense Counsel for the USAF AL Legal Services Center from 1988-1990; as a Deputy Staff Judge Advocate based in Belgium from 1987-1988; as an Area Defense Counsel from 1986-1987; and as an Assistant Staff Judge Advocate from 1985-1986.

Judge Essex holds a Juris Doctor degree from The Ohio State University, 1980 and a Bachelor of Arts Degree from Miami University in Oxford, Ohio in 1977. He holds an active law license in the state of Louisiana and is a registered solicitor in England and Wales. Judge Essex is also a professorial lecturer in law at The George Washington University Law School.

The U.S. International Trade Commission is an independent, nonpartisan, quasi-judicial federal agency that provides trade expertise to both the legislative and executive branches of government, determines the impact of imports on U.S. industries, and directs actions against certain unfair trade practices, such as patent, trademark, and copyright infringement.


John Dragseth is a Senior Principal at Fish & Richardson. His practice centers on complex legal analysis and writing – in federal appeals, patent prosecution, reexamination, pre-suit and due diligence investigations, and patent opinions. His prosecution work centers on cloud computing, mobile computing, software, medical devices, and mechanical technologies (including HVAC). John has led the briefing on more than 60 appeals to the U.S. Supreme Court and U.S. Court of Appeals for the Federal Circuit, where he was previously a law clerk to the Honorable Raymond C. Clevenger III. He has extensive experience in taking over cases on appeal and framing them for the Federal Circuit, while working closely with trial counsel. John writes and lectures frequently on a variety of patent law topics. He is also an adjunct professor teaching IP litigation at the University of St. Thomas Law School, and has authored case books on patent law and IP litigation.


Michael Ray is Managing Director of Sterne Kessler and practices in the firm's Electronics Group. He has been practicing patent law since 1990.  From a foundation that includes many years of preparation and prosecution of patent applications, much of his time is now spent providing clients with strategic intellectual property counseling and risk assessment. This includes pre-litigation analysis and negotiations, analyzing patents for infringement and validity, providing legal opinions, and handling post-grant proceedings (such as reexamination and inter partes review) before the United States Patent and Trademark Office (USPTO).

Mr. Ray's practice also involves negotiating and drafting license, settlement and various other IP-related agreements, and performing IP due diligence analyses in conjunction with mergers, acquisitions and technology licensing.  His work continues to include patent application preparation and prosecution. He has also acted as the de facto IP counsel for several leading-edge technology companies, where he developed programs to protect IP assets, assure ownership, and assure freedom to operate.  In addition, Mr. Ray has counseled numerous emerging companies and has lectured on IP best practices. He has also lectured on the topic of reducing legal costs.

Mr. Ray currently serves as an adjunct professor at the University of New Hampshire School of Law where he teaches a Master Class on Patent Office Litigation (i.e., reexamination and post-grant proceedings under the America Invents Act). He has also been an adjunct professor at George Mason University Law School where he taught classes on patent law and practice.

Mr. Ray has done significant work in a variety of electrical and computer technologies and in medical devices.


Patricia Carson is an intellectual property partner in the New York office of Kirkland & Ellis LLP. She focuses her practice on patent litigation and patent counseling matters, including IP due diligence and licensing. She has experience prosecuting and licensing patents, as well as counseling patent holders in a variety of fields. She counsels clients on patenting strategy, patenting evaluation and IP due diligence relating to transactions, including licensing, joint ventures and acquisitions. She has represented clients in the pharmaceutical, biotechnology, chemical, medical device, consumer healthcare, consumer electronics and semiconductor fields.

Prior to joining Kirkland, as a partner at Kaye Scholer, she won a major victory on behalf of Wyeth in Wyeth v. Kappos. The case successfully challenged the U.S. Patent and Trademark Office's interpretation of a statute designed to compensate patent holders for loss of patent term due to delays in processing applications. The victory resulted in significant patent term being added to the patents at issue in that case and to patents assigned to countless other companies as well. Patricia recently acted as lead counsel for Pfizer in Pfizer v. Watson, and defended the company against Watson's attempt to launch a generic version of Rapamune®, a drug used to prevent organ rejection in transplant patients.

Patricia has a scientific background and experience as a patent examiner. She holds a Ph.D. in microbiology and immunology from Temple University School of Medicine. She devoted several years to postdoctoral studies at the Medical College of Virginia and the National Institutes of Health. She also spent several years in the U.S. Patent and Trademark Office as a patent examiner in the biotechnology group.

Patricia has been recognized in The National Law Journal's "Defense Hot List" feature and by Intellectual Asset Management (IAM) Life Sciences 250 — The World's Leading Life Sciences Lawyers.


Publications

"Trial Strategies in the Era of the Troll," Corporate Counsel, September 7, 2010 Written Description, Chapter in Pharmaceutical and Biotech Patent Law, published by the Practising Law Institute, 2008